Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act 1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434...

Case [2021] ATMO 70

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434 (3,5,30) – ANTICAY – both in the name of Biodental Remin Ltd. 

Delegate: Nicholas Smith
Representation: Opponent: Gadens Lawyers
Applicant: Edward Thompson of Counsel instructed by Michelle Gorton of Gorton IP
Decision: 2021 ATMO 70
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Marks during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register

Background

  1. This decision is made pursuant to two applications made on 26 August 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Biodental Industries Pty Ltd (‘Applicant’) to remove the trade marks detailed below (‘Trade Marks’) from the Register of Trade Marks.  The applications were made in respect of all of the goods for which the Trade Marks are registered, that is, the applications  are for complete removal of the Trade Marks for all the goods for which they are registered (collectively ‘Registered Goods’).

Registration No.

1316708

Lodgement date

24 August 2009

Goods

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Owner

Biodental Remin Ltd.

Trade Mark

anticay

Registration No.

1642434

Lodgement date

21 August 2014

Goods

Class 3: Cleaning, polishing, scouring and abrasive preparations; oral care preparations; dentifrices, non-medicated mouthwash and dental rinses, breath freshener, toothpaste (medical and non-medical); dental bleaching gels; dental care preparations (non-medicated); dental rinses, non medicated; non-medicated dental preparations; products for dental hygiene; rinses to prevent dental caries; tartar colouring tablets for use in dental hygiene; perfumery, essential oils; body care preparations; non-medicated preparations for the care of the body, hair and skin; soaps, cosmetics, body lotions, hair lotions, creams, gels, lotions, oils, balsams, powders, talcum powders and sprays for use on the body and skin; non-medicated preparations for the treatment, care, cleansing, soothing, revitalising and relaxing of the body, hair and skin; skincare preparations; personal hygiene products in this class; toiletries; deodorants and anti-perspirants for personal use; sunscreen preparations; sun-tanning preparations

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted…

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AGLC
Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act 1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434... [2021] ATMO 70
Case
[2021] ATMO 70
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by Biodental Remin Ltd. to applications by Biodental Industries Pty Ltd for the removal of two trade marks, numbered 1316708 and 1642434, from the Register under section 92 of the *Trade Marks Act 1995* (Cth). The applications for removal were based on allegations of non-use. The decision was made by Nicholas Smith, Hearing Officer.

The primary legal issue before the Hearing Officer was whether Biodental Remin Ltd. had demonstrated sufficient use of the trade marks during the relevant period to prevent their removal from the Register, or alternatively, whether the Registrar should exercise discretion to allow the trade marks to remain registered. Specifically, the Hearing Officer had to consider if the evidence presented established bona fide use of the trade marks in the course of trade, or if circumstances justified the preservation of the trade marks as assets for the benefit of creditors.

The Hearing Officer found that while the opponent, Biodental Remin Ltd., had been wound up in insolvency and its liquidator had sought to preserve the trade marks as assets, the evidence of use was insufficient. The opponent's evidence included invoices for sales to India, but crucially, no sales of products bearing the trade marks in Australia during the relevant period were established. Furthermore, there was no documentary evidence of any licence agreements with third parties. The Hearing Officer noted that a single bona fide use could be sufficient, but it required overwhelmingly convincing proof, which was lacking. Consequently, the Hearing Officer concluded that it was not an appropriate case to exercise the Registrar's discretion to allow the trade marks to remain registered.

The Hearing Officer ordered that both trade marks, 1316708 and 1642434, be removed from the Register in respect of all goods for which they were registered, one month from the date of the decision, subject to any appeal. The Hearing Officer also awarded costs in favour of the applicant, Biodental Industries Pty Ltd.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

I further note that a single bona fide use of a trade mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[6][5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].[6] Nodoz Trade Mark (1962) RPC 1, 7.Opponent’s Evidence The Opponent’s EIS consists of a declaration made on 18 May 2020 by Mathew Gollant, Principal of CJG Advisory, the appointed liquidator of the Opponent, with Exhibits MG-1 to Confidential Exhibit MG-4 (‘Gollant 1’). Gollant 1 conveys the following information:·The Opponent was wound up in insolvency on 2 June 2017 and the Declarant was appointed liquidator on that day. The Opponent is a dental technology company, specialising in the development of formulas and compounds for use in assisting dental hygiene practices.·In 2009 the Applicant, then a related entity of the Opponent, adopted the Trade Marks to describe a calcium phosphate complex used for a wide range of dental goods (the ‘Complex’). The rights in the Trade Marks were assigned to the Opponent in 2010. The Declarant understands that the Applicant is a shareholder in the Opponent.·Prior to being placed in external administration in 2017, the Opponent had been manufacturing and supplying certain goods under and by reference to the Trade Marks including manufacturing and selling the Complex and licensing the Trade Marks overseas.·The Opponent has included the Trade Marks as assets available for sale as part of its liquidation, evidencing a clear intention that the Trade Marks should be used by the purchaser of the Opponent’s assets. ·The Opponent entered into a license agreement with Oral Therapeutics India Limited and Abbot Healthcare Private Limited in December 2012 for the licensing of the Trade Marks in connection with the sale or distribution of products in India. The Opponent has sold products bearing the Trade Marks to customers in India. However the Opponent has made no sale of products bearing the Trade Marks in the relevant period. ·The Opponent’s ability to use the Trade Marks has been hampered by the Opponent being under external administration since 2 June 2017 and the Declarant requests that the Registrar exercise its discretion to allow the Trade Marks to remain on the Register to preserve the assets of the Opponent for sale to benefit the Opponent’s creditors. Gollant 1 contains as Confidential Exhibit MG-4, three invoices (of which one is in the relevant period) for the sale of what is described as ‘anticay powder’ (which I assume is the Complex) to India. There is no documentary evidence of any licence agreement with third parties, and no evidence of sales or advertising of any product under the Trade Marks in Australia. The Opponent’s EIR consists of a declaration made on 21 October 2020 by Mathew Gollant with Exhibits MG-5 to Confidential Exhibit MG-7 (‘Gollant 2’) and a declaration by Dr Tushaan Bhindi, Director of Better Teeth Co Pty Ltd (an early investor in the Opponent) made on 21 October 2020 (‘Bhindi Declaration’).

Decision

Reasons for decision

Given the matters considered above I consider that this is not an appropriate case to exercise the Registrar’s discretion to allow the Trade Marks to remain registered in respect of goods for which they have not been used on or in relation to during the relevant period.Decision I decide that the Opponent has not established its opposition to removal and the Trade Marks should be removed from the Register in respect of all goods for which they are registered. Accordingly, I direct that registrations 1316708 and 1642434 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.Costs The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1316708 against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1642434 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[17] [17] [2001] ATMO 78.Nicholas SmithHearing OfficerHearings and Oppositions 27 July 2021

Ratio Decidendi

Legal Principle Established

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